Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88434477 GENESIS(Standard Characters, see http://uspto.report/TM/88434477/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examiner has refused the applied-for-mark on the basis that GENESIS "is a varietal name for the identified goods" and relies upon TMEP ?1202.12 in support of the refusal. Applicant respectfully disagrees. While it is true that TMEP ?1202.12 contemplates that varietal names cannot be registered, it is premised on the basis that "such varieties are known to the U.S. consumer." Indeed, as noted on USDA's website in red font that the appearance of the name in a search result does not mean that the name has been released in the United States (see attached, Exhibit A)("**Please note that even if you do see a variety name listed, it does not mean that the variety has been released in the U.S.**"). In other words, the search results alone do not provide sufficient evidence that the variety is "known to the U.S. consumer" at all. Moreover, the use of a varietal name for one crop is not necessarily descriptive or likely to lead to any confusion in the marketplace when it is used as a trademark for an entirely different crop. For instance. even for the sake of argument, if consumers were aware of the variety name in connection with barley, that in no way should impact the availability to use the mark as an indication of source in connection with corn or soybeans. The relevant consuming public would readily distinguish the as-amended applied-for-goods for several reasons. To start, barley is a cover crop, not a row crop (see attached, Exhibit B). Further still, the relevant consuming public would appreciate that barley is grown in entirely different geographies than the as-amended applied-for-goods. Because the applied-for-mark is not a variety name that is used generically or to describe the applied-for-goods, Applicant respectfully requests that the refusal be withdrawn. Accordingly, Applicant respectfully submits that the application is in condition for allowance. The Examiner is invited to contact the undersigned directly if any issues remain. Respectfully submitted, /Allison E. Kerndt/ Allison E. Kerndt, Attorney of record, Iowa bar member

EVIDENCE

Original PDF file:
evi_1732112764-2020050114 4300151823_._Exhibit_A_US DA_website_notice_05.01.2 020.pdf
Converted PDF file(s) ( 1 page) Evidence-1
Original PDF file:
evi_1732112764-2020050114 4300151823_._Exhibit_B_US DA_Barley_Plant_Guide.pdf
Converted PDF file(s) ( 7 pages) Evidence-1Evidence-2Evidence-3Evidence-4Evidence-5Evidence-6Evidence-7

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 031 for Genetically-modified agricultural seeds for planting
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.


Proposed:

Tracked Text Description: Genetically-modified agricultural seeds for planting; Genetically-modified agricultural seeds for planting row crops, namely corn and soybean seedsClass 031 for Genetically-modified agricultural seeds for planting row crops, namely corn and soybean seeds
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

OWNER AND/OR ENTITY INFORMATION
Applicant proposes to amend the following:
Current: M.S. Technologies, L.L.C., a limited liability company legally organized under the laws of Iowa, having an address of
      103 Avenue D
      West Point, Iowa 52656
      United States
      Email Address: XXXX

Proposed: M.S. Technologies, L.L.C., a limited liability company legally organized under the laws of Iowa, having an address of
      103 Avenue D
      West Point, Iowa 52656
      United States
      Email Address: XXXX
Correspondence Information (current):
      Allison E. Kerndt
      PRIMARY EMAIL FOR CORRESPONDENCE: akerndt@nyemaster.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): epolzin@nyemaster.com; ptomail@nyemaster.com
Correspondence Information (proposed):
      Allison E. Kerndt
      PRIMARY EMAIL FOR CORRESPONDENCE: akerndt@nyemaster.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): epolzin@nyemaster.com; ptomail@nyemaster.com

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /Allison E. Kerndt/     Date: 05/01/2020
Signatory's Name: Allison E. Kerndt
Signatory's Position: Attorney of record, Iowa bar member

Signatory's Phone Number: 515-283-3100

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    Allison E. Kerndt
   NYEMASTER GOODE, P.C.
   
   700 WALNUT STREET #1600
   DES MOINES, Iowa 50309
Mailing Address:    Allison E. Kerndt
   NYEMASTER GOODE, P.C.
   700 WALNUT STREET #1600
   DES MOINES, Iowa 50309
        
Serial Number: 88434477
Internet Transmission Date: Fri May 01 15:14:07 ET 2020
TEAS Stamp: USPTO/ROA-XXX.XX.XXX.XX-2020050115140783
8046-88434477-710c894eaa9fb0c6dec2d197b4
83799477c5ee5e122721522de264627e037999-N
/A-N/A-20200501144300151823